Since KODAK had an earlier Israel trade mark No 12555 RETINA, from 1953 in class 9 for photographic cameras the mark was refused under Section 9(11) of the trademark regulations.

Applicant submitted a coexistence agreement from KODAK, but the Examiner felt this was insufficient, and the applicant requested an oral hearing in which Applicant argued that APPLE uses the mark on screens, whereas KODAK used the mark on lenses for mechanical cameras. APPLE argued that their target audience was general, whereas KODAK’s products were aimed at professional photographers. Furthermore, the mark was successfully registered in a number of jurisdictions around the world including the UK, Switzerland and New Zealand. Since the applicant uses the logo RETINA together with the iconic Apple logo, there is no real likelihood of confusion.

In her ruling, Deputy Commissioner Jacqueline Bracha noted that the triple test (similarity of marks, similarity of goods, customers and any other reasons), was all well and good for similar but non-identical marks. However, where the mark is identical, the test should be applied very stringently. Citing Seligsohn and the visa decision she noted that if the mark is identical, one has to be very careful about allowing co-existence. Nevertheless, the goods so marked are different. She noted that despite both being related to photography, the goods neither compete nor have a symbiotic relationship, where one complements the other.

The retail outlets are also different. Although the general public purchasing Apple products includes professional photographers, since professional photographers are specialists it is unlikely that they would be confused regarding the origin of the different products.

Despite the coexistence agreement between the parties not being the be all and end all in such matters, this also supports the contention that there is no likelihood of confusion.

Ms Bracha also noted that the word Retina has a meaning which lowers the likelihood of association exclusively with one producer or another. She acknowledged that the mark was used together with the Apple logo, but since it was submitted on its own, and, if allowed, could be used on its own, this was given little weight. Nevertheless, on weighting everything up, she concluded that the mark could be registered.

The decision is well-reasoned. Judge Ginat’s ruling on SoHo, three days later also supports it. The problem may come about if and when KODAK or APPLE branch out into new areas. Apple Records and Apple Inc. lived in happy coexistence until the MP media players.

What I believe Ms Bracha could and should have done is to limit the scope of goods in both registered marks to define the KODAK mark as for camera accessories, lenses, etc. for the professional photographer, and Apple’s mark for consumer goods comprising largely of an LCD screen.

Some years ago I registered a trademark for the boutique winery Tanya, whilst there was a Polish vodka called Tania on the Israel market. We filed a coexistence agreement with from the Polish company, and at their request, marked our goods for wines and not vodka. This avoids future conflict.

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